Ex Parte Broumand et al

Patent Trial and Appeal Board

Oct 27, 2016

13225392 (P.T.A.B. Oct. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/225,392
18456 7590
Mike Garrabrants
14 Saint Stephens Dr.
Orinda, CA 94563
09/02/2011
10/31/2016
FIRST NAMED INVENTOR
Joseph Broumand
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
1005.002.CPUSOO 1436
EXAMINER
OSMAN BILAL AHME, AF AF
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
10/31/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
mike@artesynip.com
patentgroup@artesynip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH BROUMAND, MARC GOLUB, and
HOW ARD CHANG
Appeal2014-004296
Application 13/225,392
Technology Center 3600
Before: MURRIEL E. CRAWFORD, BRADLEY B. BAY AT, and
MATTHEWS. MEYERS, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant(s) seek our review under 35 U.S.C. § 134 of the Examiner's
Final decision rejecting claims 5, 6, 8-16 and 19-27. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2014-004296
Application 13/225,392
Claim 5 is illustrative:
5. A machine implemented process of qualified offer
presentation and acceptance, comprising: providing a script to
a web browser executing in a device, from a promoter server,
wherein the script is referenced in web page content
originating from a content server that is being accessed by the
web browser of the device;
accessing, by the script executing in the web browser,
state information provided from the content server and stored
for the web browser, the state information comprising profile
information about a user of the device, the profile information
comprising one or more items of Personally Identifiable
Information (PII) and one or more items of demographic
information;
one way hashing, by the script executing in the web
browser, at least one item of the PII;
sending the one-way hashed item of PII to the promoter
server;
sending at least one of the items of demographic
information to the promoter server; using, at the promoter
server, the one-way hashed item of PII to perform a database
query to retrieve information comprising information
indicative of which offers have been accepted by a user
associated with that one-way hashed item of PII;
determining, at the promoter server, one or more offers
having qualification criteria that match the at least one item of
demographic information and which have not been accepted
by the user associated with that one-way hashed item of PII;
sending to the script, an indication of the one or more
matching offers;
presenting one or more forms in the web browser on the
device, having at least one field
for requesting offer-specific information specified by a
respective third-party entity associated with each presented
matching offer; and returning the offer-specific information
entered by the user in each of the at least one fields to the
promoter server.
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Appeal2014-004296
Application 13/225,392
Appellant(s) appeal the following rejection(s):
1. Claims 5---6, 8-16, 19-20, and 25-26 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Frengut et al, (US 2002/0046099 Al,
pub. Apr. 18, 2002, hereinafter "Frengut"), Lukose et al, (US
2006/0041472 Al, hereinafter "Lukose") Van Lunchene et al, (US
2004/0138953 Al, hereinafter "Van Lunchene").
2. Claims 15-16 and 21-24 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Frengut, Lukose, and Van Lunchene.
3. Claim 27 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Frengut, Lukose, Van Lunchene, and Wilkins.
ISSUE
Did the Examiner err in rejecting the claims because the Examiner has
not established that the prior art discloses or suggests a promoter server
operable to use hash personally identifiable information in a database query?
ANALYSIS
The Examiner relies on Lukose for teaching sending one way hashed
personally identifiable information ("PII") to the promoter server (Final Act.
14).
The Appellants argue that the hashed PII in Lukose is not used in a
database search as required by claim 5 and that there is no suggestion in the
prior art of using hashed PII in a database search.
We find that Lukose discloses a system in which a user receives
advertiser incentives [0046]. Lukose discloses that a user may be tempted to
scam the advertising system so as to receive more advertiser incentives. To
address the possible scams by consumers, the Lukose reference teaches that
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Appeal2014-004296
Application 13/225,392
the system may implement various defenses to prevent or minimize the
occurrences of scams. Some of the ways the system can address the possible
scamming problem is by capping the amount of incentives, requiring the
consumer to have actually purchased a product, and requiring the consumer
to view advertisements and input certain information to verify that they saw
the advertisement. Lukose also discloses another way of addressing the
possible scam by a consumer in which the consumer changes their profile so
as to be one that attracts more offers. In this case, Lukose discloses that
there can be two versions of the consumer profile, one in plain text and one
that is hashed or encrypted. Lukose discloses an embodiment in which the
hashed version is a one way global function accessible by the network only.
In order for a consumer to receive an offer, the hashed version of the
consumer profile must match the plain text consumer profile [ 4 7].
While it is true the Lukose in paragraphs 4 7 discloses one way
hashing, there is no disclosure that the hashed PII is used to query a
database. In addition, it is the system, not the user, in Lukose that hashes the
profile not the web browser on the user's device as required by claim 5.
The Examiner also relies on paragraph 20 of Lukose for teaching this
subject matter. Paragraph 20 discloses that a client may permit transmission
of targeted advertisement to the client without revealing the PII of the user.
However, this portion of Lukose does not disclose one way hashed PII and
certainly does not disclose using the hashed PII as the basis of a query of a
database.
The Examiner does not explain how the teaching in Lukose of
consumers receiving advertisements without revealing PII and the teaching
of hashing consumer profiles so as to prevent the consumers from scamming
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Application 13/225,392
the system suggest using hashed Pll to query a database. The only
explanation of the reasoning for this rejection is that it is merely a
combination of old elements in which each element would perform the same
function as it did separately and one of ordinary skill in the art would have
recognized the results as predictable (Final Act. 14).
However, the teaching in paragraph 20 of not revealing PII in order to
receive advertisement in Lukose does not involve the function of using PII
in a database query in any way. In addition, there is no disclosure in Lukose
in paragraph 20 of one way hashing by the user.
The function of the hashed consumer profile as disclosed in Lukose in
paragraph 4 7 is to prevent the consumer from scamming the system by
allowing the system to compare the hashed consumer profile with the plain
text consumer profile. The function disclosed in Lukose of the hashed
consumer profile is not to perform a database query. In addition, it is the
system in Lukose that hashes the profile, not the consumer. As such, the
rationale of the rejection does not support a conclusion of obviousness.
In view of the foregoing, we will not sustain the Examiner's rejection
of claim 5 and claims 6, 8-12 dependent thereon.
We will also not sustain the rejection as it is directed to claim 13 and
claims 14 to 16 dependent therefrom. Claim 13 requires that promoter
servers receive one way hashed PII from the consumer device. As discussed
above, Lukose discloses that the PII is hashed by the system to prevent
scamming by the consumer. In Lukose, it is the system that hashes the PII.
The Examiner has not established how this teaching in Lukose suggests the
Lukose system receiving hashed PII from the user.
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Appeal2014-004296
Application 13/225,392
In view of the foregoing, we will not sustain the Examiner's rejection
of claim 13 and claims 14--16 dependent therefrom.
We will also not sustain this rejection as it is directed to claim 19 and
claims 20-24 dependent therefrom, because claim 19 requires that a second
script executed by the web browser of the user device provides one-way
hashed PII to the promoter serving system. As such, claim 19, like claim 13,
also requires that a promoter server receiving one way hashed PII from the
consumer device.
We will likewise not sustain the rejection as it is directed to claim 25
and claims 26 to 27 because claim 25 requires a promoter server that uses
hashed PII in a database lookup.
DECISION
The decision of the Examiner is reversed.
REVERSED
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